Professional Biography

Han-Wei (Harvey) Chen Partner

  • Palo Alto

    D +1.650.838.4303

    F +1.650.838.4350

    Palo Alto

    3150 Porter Drive

    Palo Alto, CA 94304-1212

    +1.650.838.4303

    HarveyChen@perkinscoie.com

  • San Diego

    T +1.858.720.5700

    F +1.858.720.5799

    San Diego

    11452 El Camino Real, Suite 300

    San Diego, CA 92130-2080

    +1.858.720.5700

    HarveyChen@perkinscoie.com

  • Taipei

    T +886.2.8101.2031

    F +886.2.8101.2038

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Overview

Han-Wei (Harvey) Chen guides clients in shaping their patent portfolios, developing their intellectual property (IP) strategies, and often defending them against opponents’ IP-related threats. Fluent in spoken and written Mandarin Chinese and Taiwanese, Harvey frequently serves as trusted de facto in-house counsel for Asian companies navigating legal matters in the United States in intellectual property and other service areas.

Harvey drafts and prosecutes patent applications, including conducting invention disclosure meetings, examiner interviews and negotiations, and appellate proceedings. On behalf of a publicly traded company, Harvey procured several U.S. patents that are being actively enforced in district court and the International Trade Commission (ITC) against the client’s competitor. He formulates patent mining strategies, performs patent analyses in due diligence projects for corporate transactions, and delivers support of patent litigation, including preparing infringement and invalidity claim charts, conducting prior art searches, and providing client strategic consultation. Harvey is also highly experienced in handling post-grant proceedings before the U.S. Patent and Trademark Office (USPTO), particularly ex parte reexaminations and inter partes reviews, and he collaborates closely with the firm’s litigators on patent litigation matters.

In recent successes for his clients, Harvey developed creative, strategic solutions to significantly expand the patent portfolio of one of the world’s leading mobile phone manufacturers. In each of the past few years, he advised on and directly supervised the procurement of several hundreds of U.S. patents relating to standard essential patents (SEP) such as 5G, Wi-Fi, video codec, and other emergent technologies. Harvey also shaped and prosecuted a cloud computing company’s entire patent portfolio with protection in key innovation areas, which contributed to a significant, multibillion-dollar acquisition in going private. In addition, he assisted a major electronic display company in investigating and analyzing competitors’ potential patent infringement in a multimillion-dollar licensing negotiation. He handles administrative appellate proceedings involving patents valued in the tens of millions of dollars.

Harvey focuses on developing patent strategies to achieve his clients’ goals in the most cost-effective ways. Trained as an electrical engineer and a computer scientist, he enjoys working with innovative companies and individuals on cutting-edge matters related to consumer electronics, embedded systems, digital and analog circuit design, integrated circuit (IC) manufacturing, telecommunication and computer networks, computer architecture, cloud computing and big data processing, distributed database, machine learning (ML), uncrewed vehicles, and light detection and ranging. Harvey also is experienced in matters involving medical devices, including medical imaging equipment, artificial intelligence (AI)-assisted diagnosis, bioelectrical signal-based control, automated healthcare platforms, and blockchain-related applications.

Committed to his pro bono practice, Harvey led a team of attorneys in obtaining a settlement for a Northern California artist whose works were used without authorization in a widespread advertising campaign. He also serves as a guest lecturer at Carnegie Mellon University and hosts career workshops for Asian American law students. Before moving to the United States, Harvey worked as an engineer at Philips Semiconductors. He also served in the military as a second lieutenant artillery officer.

IPR Practice: “Good Causes” and Responding to Patent Owners’ Preliminary Responses

We wondered if some “good causes” were more effective than others when seeking leave to reply to a patent owner’s preliminary response (POPR) before institution of an inter partes review proceeding. Our analysis looks at the top 10 “good cause” arguments and their connection to institution decisions.

READ OUR ANALYSIS AND PRACTICE TIPS

Professional Leadership

  • American Intellectual Property Law Association, Member
  • American Bar Association, Member
  • Asian American Bar Association, Member
  • Capital Pro Bono Honor Roll, 2014-2015, 2017-2020

Related Employment

  • Carnegie Mellon University Silicon Valley, Guest Lecturer
  • Institute of Law for Science and Technology, National Tsing Hua University (Taiwan), Adjunct Faculty, 2018
  • Mahamedi Paradice Kreisman LLP, San Jose, CA, Associate, 2011-2013
  • Jones Day, Taipei, Taiwan, Summer Associate, 2008
  • Taiwan Semiconductor Manufacturing Company (TSMC) Ltd., Legal Intern, 2008
  • Philips Semiconductors, Kaohsiung, Taiwan, Equipment Engineer, 2005

Experience

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Insights

RELATED INFORMATION

Bar and Court Admissions

  • California
  • District of Columbia
  • Texas
  • Taiwan, Foreign Legal Affairs Attorney
  • U.S. Patent and Trademark Office
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Ninth Circuit
  • U.S. District Court for the Northern District of California

Education

  • University of Texas School of Law, J.D., 2010, Associate Editor, Texas Intellectual Property Law Journal
  • Pennsylvania State University, M.S., Computer Science and Engineering, 2007
  • National Cheng Kung University, B.S., Electrical Engineering, 2003

Languages

  • English
  • Chinese - Mandarin
  • Taiwanese